A Range Disclosed By The Prior Art Is Only Anticipatory If It Describes The Claimed Range With Sufficient Specificity

In Ineos USA LLC v. Berry Plastics Corp., No. 14-1540 (Fed. Cir. Apr. 16, 2015), the Federal Circuit affirmed the district court's SJ dismissing Ineos USA LLC's ("Ineos") patent infringement suit based on anticipation of the asserted claims.

Ineos accused Berry Plastics Corporation ("Berry Plastics") of infringing U.S. Patent No. 6,846,863 ("the '863 patent"). Berry Plastics moved for SJ that the asserted claims were anticipated by certain prior art references, including U.S. Patent No. 5,948,846 ("the '846 patent").

The '863 patent is directed to polyethylene-based compositions. Claim 1 is the only independent claim of the '863 patent:

1. Composition comprising at least [1] 94.5% by weight of a polyethylene with a standard density of more than 940 kg/m3, [2] 0.05 to 0.5% by weight of at least one saturated fatty acid amide represented by CH3(CH2)nCONH2 in which n ranges from 6 to 28[,] [3] 0 to 0.15% by weight of a subsidiary lubricant selected from fatty acids, fatty acid esters, fatty acid salts, mono-unsaturated fatty acid amides, polyols containing at least 4 carbon atoms, mono- or poly-alcohol monoethers, glycerol esters, paraffins, polysiloxanes, fluoropolymers and mixtures thereof, and [4] 0 to 5% by weight of one or more additives selected from antioxidants, antacids, UV stabilizers, colorants and antistatic agents.

Slip op. at 2-3 (alterations in original).

There was no dispute that the '846 patent disclosed 94.5% by weight of a polyethylene with a standard density of more than 940 kg/m3, and that stearamide, disclosed in the '846 patent, is a compound within the class of saturated fatty acid amides represented by CH3(CH2)nCONH2 in which n ranges from 6 to 28. The district court found that the '846 patent's disclosure of a lubricant, which could be stearamide, in amounts from 0.1 to 5 parts by weightand more specifically of "at least 0.1 part by weight per 100 parts by weight of polyolefin, in particular of at least 0.2 parts by weight, quantities of at least 0.4 parts by weight being the most common ones"describes specific values (e.g., 0.1 part by weight) along with the broader disclosure of the full range (0.1 to 5 parts by weight). Id. at 3 (citation omitted). Thus, the district court concluded that the '846 patent's disclosure of stearamide in these amounts met limitation 2. The district court then determined that the subsidiary lubricant of limitation 3 and the additive of limitation 4 are optional in the claimed...